PCT Newsletter 11/2024: Practical Advice
WARNING: Although the information which follows was correct at the time of publication, some information may no longer be applicable; for example, amendments may have been made to the PCT Regulations and Administrative Instructions, as well as to PCT Forms, since the PCT Newsletter concerned was published; changes to certain fees and references to certain publications may no longer be valid. Wherever there is a reference to a PCT Rule, please check carefully whether the Rule in force at the date of publication of the advice has since been amended.
Options for action following the international search
Q: I filed my PCT application and have received the international search report and the written opinion from the International Searching Authority. I wish to address the issues raised in the written opinion and thereby hopefully increase my chances of obtaining patent protection in the national phase. What can I do to achieve this objective and how?
A: The purpose of the international search is to discover any relevant prior art. The results of the international search are set out in the international search report (ISR). The International Searching Authority (ISA) also establishes a written opinion (WOSA) providing a non-binding opinion on the question of whether the claimed invention appears to be novel, to involve an inventive step (to be non-obvious) and to be industrially applicable. By bringing relevant prior art to the attention of the applicant, the international search enables the applicant to make informed decisions on any subsequent actions to be taken, including potentially making amendments during the international phase with effect in all Contracting States before pursuing patent protection in the national phase.
In order to better understand your options at this stage of your application, and so that you can make better use of the PCT System, here are some general options you may wish to consider:
Amendments under PCT Article 19
After receiving the ISR, you may file amendments to the claims with the International Bureau (IB) (not with the receiving Office or the ISA) under PCT Article 19.
The filing of amended claims is free of charge. They will be published by the IB, and the ISA will not carry out a second international search. Any amended claims will only be examined in the international phase if you file a demand for international preliminary examination.
Submitting amended claims under PCT Article 19 may be useful if there is a reason to better define the scope of the claims for the purposes of provisional protection in designated States the national laws of which provide for such protection.
The amendments should not go beyond the disclosure in the international application as originally filed. The time limit for filing amendments under PCT Article 19 is, in accordance with PCT Rule 46.1, two months from the date of transmittal (that is, the date of mailing) of the ISR by the ISA, or 16 months from the priority date, whichever time limit expires later. Any such amendments received by the IB after the expiration of the applicable time limit will be considered to have been received on time if they are received before the technical preparations for international publication have been completed.
Amendments under PCT Article 19 should comprise:
(i) a complete set of claims in replacement of the claims originally filed;
(ii) a letter which must indicate the differences between the claims as filed and those as amended; the letter must also indicate the basis for the amendment to the claims with specific references to particular parts of the application (description, claims, drawings) as originally filed; and
(iii) an optional statement under PCT Article 19 explaining the amendments and how they would help overcome the objections raised in the WOSA. Any such statement will also be published.
Helpful information in relation to the letter under (ii) and the statement under (iii) can be found in the ‘Practical Advice’ of PCT Newsletter No. 09/2010 available at:
https://www.wipo.int/edocs/pctndocs/en/2010/pct_news_2010_09.pdf
Demand for international preliminary examination under Chapter II of the PCT1
You may also consider filing a demand for international preliminary examination under Chapter II of the PCT (please refer to PCT Article 31 in connection with PCT Rule 53).
According to PCT Rule 54bis, the time limit for filing a Chapter II demand is three months from the date of transmittal of the international search report to the applicant or 22 months from the priority date, whichever expires later.
When filing the demand or during international preliminary examination, you may submit amendments not only to the claims, but also to the description and/or the drawings under PCT Article 34. You may also submit arguments relating to the observations raised in the written opinion. This gives you the possibility to formally respond to the written opinion.
The demand should be filed with the competent International Preliminary Examining Authority (IPEA), together with the payment of the associated fees (provided in Table II of the PCT Fee Tables at http://www.wipo.int/export/sites/www/pct/en/docs/fees.pdf). The results of any international preliminary examination are reflected in an international preliminary report on patentability (IPRP II) established by the IPEA, and the IB will also receive a copy and communicate it to the elected Offices.
If you consider filing a demand, your attention is drawn to two articles in the ‘Practical Advice’ of the PCT Newsletter:
- 04/2010: “Factors to be considered when deciding whether or not to file a demand for international preliminary examination – Part 1”, available at https://www.wipo.int/edocs/pctndocs/en/2010/pct_news_2010_04.pdf, pages 8 to 11; and
- 05/2010: “Factors to be considered when deciding whether or not to file a demand for international preliminary examination – Part 2”, available at https://www.wipo.int/edocs/pctndocs/en/2010/pct_news_2010_05.pdf, pages 8 to 11.
Informal comments on the Written Opinion of the International Searching Authority
If you do not wish to request international preliminary examination but still want to react to the findings of the ISA on an informal basis and without any further expense, you may file informal comments on the written opinion of the ISA, again with the IB and not the ISA. However, any such comments will not be examined during the international phase. They will simply be made publicly available on WIPO’s PATENTSCOPE database at 30 months from the priority date as a document on file. It is then up to the designated Offices to determine whether, and to what extent, to take the informal comments into account in the national phase. Filing informal comments on the written opinion of the ISA does not preclude you from filing a demand for international preliminary examination but you will have to submit the informal comments directly to the IPEA if you would like them to be considered during international preliminary examination.
A Practical Advice entitled “Information on submitting informal comments to address issues raised in the written opinion of the International Searching Authority” is available in PCT Newsletter No. 01/2015 at:
https://www.wipo.int/edocs/pctndocs/en/2015/pct_news_2015_13.pdf
Doing nothing and waiting for the entry into the national phase
After receiving the results of the international search from the ISA, you may also simply do nothing and wait until you decide to proceed with your application for the entry into the national phase. This is typically the case where the ISR and WOSA did not contain any citation challenging the patentability of your application or any negative opinion. Even where they did contain a negative citation or opinion, there is no obligation to respond to these reports.
It is also important to note that applicants have, in the national phase, a further opportunity to amend the description, claims and drawings within at least one month from the time when the steps necessary to enter the national phase are performed (in accordance with PCT Articles 28 and 41 and Rules 52 and 78, as the case may be). In some cases, it may be preferable to address any issue identified in the ISR and WOSA by filing amendments with specific designated Offices in the national phase.